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December 3, 1991

DONJOY, a California Corporation, Defendant.


The opinion of the court was delivered by: WILLIAM B. ENRIGHT


 Medical Designs contends that in early 1980, one of its owners, Gary Bledsoe, conceived and reduced to practice a knee brace that attached to the leg via Velcro tabs and allowed an adjustable range of motion for recuperating patients ("Bledsoe brace"). The Bledsoe brace offered several advantages over knee braces commonly used at that time: it was easily adjusted for different sizes of legs; it adjusted through hinges to allow any range of motion desired by the doctor; it was quickly and easily applied; it could be removed and reapplied at will; it was lightweight; and it was relatively inexpensive. Other braces in effect in 1980 primarily were rigid, applied as casts or with compounds and were not easily removable.

 On January 22, 1981, Bledsoe applied for a patent for his brace. During prosecution of his application, Bledsoe did not have to limit the scope of any of his claims. The Bledsoe brace received a patent on the brace on October 4, 1983. Bledsoe had assigned ownership of the patent to Medical Designs, which has manufactured the brace ever since.

 In this action, Medical Designs is suing Donjoy for alleged patent infringement. Medical Designs alleges that three different types of braces manufactured by Donjoy infringe Medical Designs' patent. Medical Designs seeks reasonable royalties for each infringing device Donjoy manufactured and sold.

 Donjoy contends that Medical Designs' patent is invalid. Donjoy asserts that Bledsoe did nothing more than combine existing art in making his brace, and that, therefore, the patent is invalid because the brace was obvious to a person of ordinary skill in the art. Specifically, Donjoy contends that Drs. Jones and Mauldin had built prototypes of their braces by 1979. These braces were very similar to the Bledsoe brace, with all of the same advantages over rigid braces. By July of 1980, the Mauldin/Jones brace was used on patients in Texas. Further, two other companies were making similar adjustable knee braces prior to 1980 and had received patents. Donjoy thus contends that the Bledsoe brace was merely an obvious extension of prior art, including of the Mauldin/Jones braces. Donjoy also contends that Medical Designs' patent is invalid under the doctrine of simultaneous invention because others, including Drs. Jones and Mauldin, were at least working on similar inventions at the same time. Further, Donjoy asserts the patent is invalid under the doctrine of double patenting because Medical Designs received both a design patent and a utility patent on practically the same brace. Donjoy asserts that the two patents contain almost identical drawings, and thus are at least obvious variations of each other. Finally, Donjoy also contends that it is merely using prior art in making its braces, and thus is not infringing Medical Designs' patent.

 Of course, Medical Designs challenges Donjoy's contentions. Medical Designs questions the timing of the invention by Drs. Mauldin and Jones. Medical Designs also contends that its brace was new and not obvious or an extension of prior art.

 Here, Donjoy moves for summary judgment on the ground that its brace does not infringe Medical Designs' patent because the Donjoy braces do not use variably attachable devices to fasten the straps to the brace. Donjoy asserts that during prosecution of the patent, the examiner initially rejected Medical Designs' patent application, requiring Medical Designs to show why its particular brace was new or different from prior art. After meeting with representatives from Medical Designs, the patent examiner noted in his record that the "particular Velcro attachment of the braces and pads as well as the braces and encircling straps is considered novel." Thereafter, Medical Designs changed the language of its patent application describing the attachment from "selectively attached" to "selectively attachable." The patent was then assigned.

 Two types of Donjoy's braces use straps held in place by channels in the brace itself, much like beltloops. Another Donjoy model uses frictional attachments. Donjoy argues that these types of attachments were all present in prior art and are not covered by the Medical Designs patent. In fact, Donjoy argues that the existence of such attachments is precisely why Medical Designs had to rely on the novelty of its Velcro attachments in order to receive the patent.

 Medical Designs argues that its patent is not so limited to Velcro-type fasteners. Furthermore, Medical Designs argues that under the doctrine of equivalents, Donjoy's braces infringe.

 The parties also have filed cross-motions for summary judgment on the issue of validity of the Medical Designs patent. Donjoy asserts that the patent is invalid because of prior art, such as the Mauldin/Jones brace. Thus, Medical Designs' brace was obvious from prior art, was not the first such brace, and/or was anticipated by prior art. Also, the utility patent is invalid because it is also covered by a design patent. Donjoy points out that although Medical Designs has alleged infringement of the design patent, it fails in its opposition papers to rebut Donjoy's arguments regarding non-infringement and invalidity of the design patent. Therefore, Donjoy asserts that Medical Designs has waived its claim for infringement of the design patent.

 Medical Designs raises counter arguments against Donjoy's motion and in support of its own, asserting that Bledsoe was the first to combine the unique elements of the brace. Both parties challenge the stories of the ...

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